KIT-KAT CAN’T CATCH A BREAK…

The European Court of Justice (ECJ) has today ruled that the four finger shape of Nestlé’s Kit Kat bar lacks distinctiveness and cannot receive protection as a trade mark.

Nestlé had previously obtained trade mark protection for the bar in 2006 with the EU Intellectual Property Office (EU IPO). Rival confectioner, Cadbury’s (now owned by Mondelez International), challenged the registration sparking a 10 year battle over the bar which resulted in the ECJ quashing Nestlé’s EU IPO registration in 2016.

Nestlé appealed to the ECJ on the grounds that the shape was recognisable as belonging to the brand in several EU countries including Germany, France, Italy and the Netherlands. Today’s long awaited decision marks the end of the road for Nestlé’s battle for protection.

What’s in a shape?

In order to receive trade mark protection, the shape must be distinctive, capable of recognition as belonging to the brand without any other signifiers. The bar in question contained no other marks or signs. It was argued that in and of itself, the shape lacked distinctiveness; it’s shape partly stemmed from the required technical result e.g. the grooves being necessary in order to facilitate each finger ‘breaking away’ from the main bar.

In contrast to this, Mondelez’s own chocolate bar “Toblerone” obtained trade mark protection in 1997. Recent changes to the shape of the Toblerone bar (those unwelcome gaps between the triangles), could have jeopardised its distinctiveness and put that registration under threat. Mondelez recently announced plans to revert to the original shape and chocolate lovers (and IP lawyers) everywhere rejoiced.

Summary

The ECJ’s ruling confirms that in order to gain trade mark protection, the shape must be distinctive enough to be capable of being recognised as belonging to the brand solely on shape alone, without any other brand marks or signs.

If you feel that your business has a distinctive shape, name or logo, it is worth getting in touch with us at BPE to discuss ways in which you can protect your increasingly valuable brand.

These notes have been prepared for the purpose of an article only. They should not be regarded as a substitute for taking legal advice.